Ex parte GRUBER et al. - Page 10




          Appeal No. 1998-3207                                      Page 10           
          Application No. 08/518,874                                                  


               An element in a claim for a combination may be expressed               
               as a means or step for performing a specified function                 
               without the recital of structure, material, or acts in                 
               support thereof, and such claim shall be construed to                  
               cover the corresponding structure, material, or acts                   
               described in the specification and equivalents thereof.                

          The court's holding in Donaldson sets a limit on how broadly                
          the USPTO may construe means-plus-function language under the               
          rubric of "reasonable interpretation."  Per Donaldson, the                  
          "broadest reasonable interpretation" that an examiner may give              
          means-plus-function language is that statutorily mandated in                
          paragraph six.  Accordingly, the USPTO may not disregard the                
          structure disclosed in the specification corresponding to such              
          language when rendering a patentability determination.                      


               The structure described in the appellants' specification               
          (see pp. 7-10) corresponding to the "means for linking" is the              
          shallow slot or recess 30 formed in the bottom surface 16b of               
          the injection head 16 and extending axially between the vacuum              
          slot 18 and the injection slot 20.                                          


               We have reviewed the teachings of Bird, Timson, Pasch and              
          Wieser but fail to find any teaching therein of the claimed                 







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